Marquette Intellectual Property Law Review Volume 17 | Issue 1 Article 1 Reverse Engineering IP Tonya M. Evans Follow this and additional works at: http://scholarship.law.marquette.edu/iplr Part of the Intellectual Property Commons Repository Citation Tonya M. Evans, Reverse Engineering IP, 17 Intellectual Property L. Rev. 61 (2013). Available at: http://scholarship.law.marquette.edu/iplr/vol17/iss1/1 This Article is brought to you for free and open access by the Journals at Marquette Law Scholarly Commons. It has been accepted for inclusion in Marquette Intellectual Property Law Review by an authorized administrator of Marquette Law Scholarly Commons. For more information, please contact [email protected]. REVERSE ENGINEERING IP TONYA M. EVANS* INTRODUCTION ....................................................................................................................... 62 PART I: SAMPLING PATENT TO REMIX COPYRIGHT: THEORY IN PRACTICE ............... 66 PART II: THE INTELLECTUAL PROPERTY MONOPOLIES ................................................ 71 A. Tale of Two Regimes ..................................................................................... 72 B. Patent .................................................................................................................. 75 1. Policy Considerations and the Law ................................................ 75 C. Copyright ............................................................................................................ 76 1. Policy Considerations and the Law ................................................ 76 2. The Copyright Act .................................................................................. 78 3. Fair Use ...................................................................................................... 78 4. A Closer Look at Originality .............................................................. 81 5. Overprotection and Misuse ............................................................... 83 a. Overprotection ................................................................................. 84 b. Misuse .................................................................................................. 87 PART III: REVERSE-ENGINEERING ..................................................................................... 88 A. Reverse Engineering in the Traditional Manufacturing Context ............................................................................................................. 90 B. Reverse Engineering in the Digital Context ........................................ 91 C. Reverse Engineering & Copyright ........................................................... 94 1. Fair Use ...................................................................................................... 94 2. The Digital Millennium Copyright Act .......................................... 95 D. The Chip Act ..................................................................................................... 96 PART IV: THE IP AXIS: WHERE DISTINCT REGIMES CONVERGE ................................. 97 CONCLUSION .......................................................................................................................... 100 * Associate Professor of Law, Widener University School of Law. B.S. Communication Studies, Northwestern University. J.D., Howard University School of law. The research and writing assistance of Vanessa Mendelewski, Arrielle Millstein and Rebekka Vallandingham proved invaluable and is greatly appreciated. Special thanks to colleagues who provided the insightful commentary at the 2011 Intellectual Property Scholars Conference at DePaul University Law School, especially the guidance received from Margo A. Bagley, Professor of Law at University of Virginia School of Law. Additionally, many thanks to Rebecca Tushnet, Professor of Law at Georgetown University Law Center for her comments and those received from the other attendees at the Third Annual Intellectual Property Roundtable at The Columbus School of Law including Beth Winston. 62 MARQ. INTELL. PROP. L. REV. [Vol. 17:1 INTRODUCTION “Plagiarism is necessary, progress implies it.”1 Michalis Pichler With the advent of the Internet and digital technology, the twenty- first century has ushered in a quantum increase in the ways to create, disseminate, and commercially exploit creativity. Digital technology allows anyone to create perfect digital copies of protected works in the comfort of their homes and to distribute them to tens, hundreds, thousands, and even millions of people with the click of a hyperlink via a handheld device. Indeed, copyright touches more ordinary people in substantial ways in this age of information than at any other time in American copyright history.2 The copy-and-paste reality and firmly entrenched user expectations to access, reuse, remix, and share creative output instantly via e-mail, blogs, and social networks are far afield from what Congress originally contemplated when it responded to its constitutional call and enacted the first version of the Copyright Act to solve the public goods problem inherent in inexhaustible goods like intellectual property.3 Art forms that rely primarily on appropriation are also often at odds with the current copyright framework. For example, hip-hop music pioneer Public Enemy4 (P.E.) incorporated hundreds of recognizable and 1. Michalis Pilcher, Statements on Appropriation, UBUWEB (2009), http://www.ubu.com/papers/pichler_appropriation.html (last visited Aug. 12, 2012). Pilcher’s Statements on Appropriation is an “appropriation” style writing created out of six one sentence statements originated by the "artist/author." The statements were mixed, in a container, with eighteen one sentence quotes taken from various other sources and then printed onto a separate piece of paper. Thereafter, eighteen statements were blindly and randomly selected, listed in the order of their selection and presented as one document as the "statements on appropriation", for the presentation at Stichting Perdu, Amsterdam. Id. 2. See Pamela Samuelson et al., The Copyright Principles Project, 25 BERKELEY TECH. L.J. 1176, 1177 (2010) (“Copyright rules implicate many daily activities of ordinary people. Copyright has thus suddenly become significant not only to industry insiders who are steeped in this law's complexities, but also to the millions of people who access information on the Internet and who often share this information with others.”). 3. Copyright Act of 1790, ch. 15, 1, 1 Stat. 124, 124 (repealed 1831). The 1790 Act protected books, maps, and charts and provided for an initial term of 14 years with privilege of renewal for a term of 14 years. 4. In the 1980s, “Public Enemy emerged and distinguished itself as a ‘sampling-as-art trailblazer’ by incorporating hundreds of samples into their legendary 1988 album, It Takes a Nation of Millions to Hold Us Back. In an ingenious fashion, the group combined the samples in a unique way to create a ‘new, radical sound that changed the way music was created and experienced.’” Tonya M. Evans, Sampling, Looping and Mashing OH MY! How Hip Hop is Scratching More Than the Surface of Copyright Law, 21 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 843, 860 (2011) (citations omitted). 2013] REVERSE ENGINEERING IP 63 unrecognizable aural fragments into each of their songs before courts began to sanction aggressively the practice of music sampling.5 Their status as a trailblazer in the practice of digital sampling was mostly a result of P.E.’s “collage” style of music creation.6 P.E. incorporated bits and bytes7 of pre-existing material to create new musical tracks over which they rapped about political and social issues of race, racism, economics, violence, police brutality, and religion.8 However, their musical collage style of using samples as the building blocks of their music production was “outlawed” as an infringement.9 That determination forever changed the production of hip-hop music or any music that incorporated direct samples of copyrighted works, even if those copies and adaptations were used for some arguably transformative purpose.10 For appropriation art of all types to survive an infringement inquiry, the resulting work must be creative, original, and transformative. However, the line between uses deemed infringing or fair is far from bright, at least in ex-ante determinations by second-generation creators who rely on copyright limitations in the creative process. Accordingly, this Article examines the role that “reverse engineering” and other policies and doctrines have played in the inventive context to protect the “space” such second-generation innovators require to build upon and around existing inventions that justify the patent monopoly. Further, this Article explores how patent policy better protects and encourages that space than does copyright, theoretically and in practice. This Article asserts that copyright reform initiatives should “sample” (that is, borrow from) patent policies that protect access for further innovation to “remix” (that is, inform and reform) copyright law for the 5. See id. at 862. 6. See id. 7. A byte is “a unit of computer information or data-storage capacity that consists of a group of eight bits and that is used especially to represent an alphanumeric character.” MERRIAM-WEBSTER DICTIONARY, available at http://www.merriam- webster.com/dictionary/byte. 8. See Evans, supra note 4, at 862. 9. See Grand Upright Music, Ltd v.